The Works at Wyomissing, LLC v. Youth
Fellowship & Rescue c/o Guillermo Jalil
Claim Number: FA0605000720831
PARTIES
Complainant is The Works at Wyomissing, LLC (“Complainant”), represented by Lisa M. Hodgen, of Leisawitz Heller, 2855 Century Blvd., Wyomissing, PA 19610. Respondent is Youth Fellowship & Rescue c/o Guillermo Jalil (“Respondent”), 922 Locust Street, Reading, PA 19604.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <theworksatwyomissing.com>,
<theworkssucks.com> and <gearedforfunsucks.com>,
registered with Go Daddy Software, Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 30, 2006; the National Arbitration Forum received a hard
copy of the Complaint on May 30, 2006.
On June 1, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <theworksatwyomissing.com>, <theworkssucks.com>
and <gearedforfunsucks.com> domain names are registered with Go
Daddy Software, Inc. and that the Respondent is the current registrant of the
names. Go Daddy Software, Inc. has
verified that Respondent is bound by the Go Daddy Software, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On June 6, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 26, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@theworksatwyomissing.com,
postmaster@theworkssucks.com and postmaster@gearedforfunsucks.com by e-mail.
A timely Response was received and determined to be complete on June
26, 2006.
On June 29, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Bruce E. Meyerson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
Preliminarily, it should be pointed out that Respondent states it intended to let the <theworksatwyomissing.com> domain name expire and that it “willingly relinquishes” this domain name to Complainant. Because Respondent has admitted it does not have an interest in the <theworksatwyomissing.com> domain name, the Panel elects to forego the traditional UDRP analysis with respect to this domain name and will order the transfer of the domain name to Complainant. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer).
Accordingly, the following analysis
is limited to the remaining two domain names: <theworkssucks.com> and <gearedforfunsucks.com>.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, The Works at Wyomissing, LLC, owns The Works restaurant
and entertainment complex in Wyomissing, Pennsylvania. It has registered two trademarks: “Geared
for Fun,” and “The Works at Wyomissing.”
With respect to the <theworkssucks.com>
and <gearedforfunsucks.com> domain names, Complainant contends
that these domain names are identical to its registered trademarks with the
exception of adding the word “sucks.”
Complainant contends that Respondent’s use of these domain names is
tarnishing Complainant’s trademarks and that Respondent’s conduct is in bad
faith.
B. Respondent
Respondent, Youth Fellowship and Rescue, is a faith-based youth group
that focuses on drug prevention. It
contends that it is using the two domain names to complain about the
Complainant and an incident that occurred in September 2005. Respondent asserts that its dispute with
Complainant arose after an assistant manager of Complainant asked a group of
minority children, supervised by Respondent, to leave the restaurant, allegedly
stating, “We don’t want your kind here.”
Respondent offered to discuss this situation “over a pizza, paid by
Respondent,” but contends that there has been no response from Complainant to this
offer. By inserting the word “sucks”
into the domain name, Respondent contends that there cannot be any confusing
similarity with Complainant’s marks and it is defending its right to protest
the actions of the Complainant based upon “principle.”
FINDINGS
Complainant owns The Works restaurant and entertainment complex in
Wyomissing, Pennsylvania. It has
registered two trademarks: GEARED FOR FUN! and THE WORKS AT WYOMISSING. Respondent Youth Fellowship and Rescue is
using the two domain names to complain about the Complainant and an incident
that occurred in September 2006. A
group of minority children, supervised by Respondent, were asked to leave the
restaurant, and a manager of the restaurant stated: “We don’t want your kind
here.” Respondent is using the two
domain names to express its objection to Complainant’s actions toward the youth
members of Respondent’s group.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1)
the domain name
registered by the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the Respondent
has no rights or legitimate interests in respect of the domain name; and
(3)
the domain name
has been registered and is being used in bad faith.
Because
Complainant has not shown that the domain names are identical or confusingly
similar to Complainant’s marks, it is not necessary to address the second and
third elements of Policy 4(a).
Although there are a number of
ICANN decisions that have reached a different conclusion, see, e.g., ADT Servs. AG v.
ADT Sucks.com, D2001-0213 (WIPO Apr. 23, 2001), the Panel concludes
that the better reasoned decisions hold that the addition of the word “sucks”
to a trademark or service mark sufficiently distinguishes the domain name from
the mark. Thus, the inclusion of the
term “sucks” in the <theworkssucks.com> and <gearedforfunsucks.com>
domain names sufficiently differentiates these domain names from Complainant’s
THE WORKS AT WYOMISSING and GEARED FOR FUN! marks and therefore the domain
names are not confusingly similar to the marks within the meaning of Policy ¶
4(a)(i). See KB Home v.
RegisterFly.com- Ref# 9323034, FA 506771 (Nat. Arb. Forum Aug. 30, 2005)
(finding that the addition of the term “sucks” to the complainant’s KB HOME
mark in the <kbhomesucks.com> domain name did not make the domain name confusingly
similar to the mark because a reasonable person would not conclude that a
person who registers a domain name containing the term “sucks” has any relation
to the owner of the mark); see also Wal-Mart Stores, Inc. v.
wallmartcanadasucks.com, D2000-1104 (WIPO Nov. 23, 2000) (finding that the
respondent has rights and legitimate interests to use the
<wallmartcanadasucks.com> domain name as a forum for criticism of the
complainant).
As
one commentator has observed:
The absolute lack of confusion between
a trademark and a “sucks.com” domain name
suggests that ICANN panels should never decide these “sucks.com” cases in favor of the complainant. Panels who do so are overreaching and
misapplying the Uniform Policy.
Robert
A. Badgley, Domain Name Disputes at 6-61 (2002).
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief with respect to <theworkssucks.com> and
<gearedforfunsucks.com>
shall be DENIED.
With respect to <theworksatwyomissing.com>,
it is Ordered that the domain name be TRANSFERRED
from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 7, 2006
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